{"id":2608,"date":"2019-12-19T16:15:00","date_gmt":"2019-12-19T21:15:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2608"},"modified":"2019-12-24T11:58:28","modified_gmt":"2019-12-24T16:58:28","slug":"award-of-attorneys-fees-hinges-on-a-finding-of-an-exceptional-case-not-an-exceptional-part-of-a-case","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2608","title":{"rendered":"Award of Attorneys’ Fees Hinges on a Finding of an Exceptional Case, Not an Exceptional Part of a Case"},"content":{"rendered":"\n

In Intellectual Ventures I LLC v. Trend Micro Inc.<\/a>, [2019-1122] (December 19, 2019), the Federal Circuit vacated and remanded a finding of excptionality under 35 USC 285, because it was unclear whether the
district court applied the proper legal standard. <\/p>\n\n\n\n

During cross-examination at trial, Intellectual Ventures\u2019s expert
changed his opinion about the meaning of the term “characteristic.” Following the completion of trial in the Symantec action, Trend Micro moved for clarification of the district court\u2019s claim constructions in light of the expert\u2019s changed opinion. During the hearing on Trend Micro\u2019s motion, Intellectual Ventures\u2019s counsel maintained that the expert had not changed his opinion, despite the expert\u2019s clear trial testimony to the contrary. The
district court granted Trend Micro\u2019s motion for clarification. The district court also granted leave for Symantec and Trend Micro to file motions
for judgment as a matter of law that the asserted patent claims were invalid under 35 U.S.C. \u00a7 101.<\/p>\n\n\n\n

Trend Micro moved for attorney fees under \u00a7 285, requesting that the court declare the case exceptional due to the circumstances surrounding Intellectual Ventures\u2019s expert\u2019s changed opinion. The district court granted Trend Micro\u2019s motion, concluding that Intellectual Ventures\u2019s conduct was exceptional solely with respect to this collection of circumstances regarding its expert\u2019s changed testimony, and awarded $444,051.14 in attorneys’ fees. . However, the Federal Circuit found that the case overall was not exceptional, concluding that it would be wrong to say that Intellectual Ventures\u2019s case was objectively unreasonable.<\/p>\n\n\n\n

Section 285 provides that \u201c[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.\u201d 35 U.S.C. \u00a7 285. An exceptional case \u201cstands out from others with respect to the substantive strength of a party\u2019s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated. District courts may determine whether a case is \u2018exceptional\u2019
in the case-by-case exercise of their discretion, considering the totality of the circumstances.<\/p>\n\n\n\n

Applying an abuse of discretion standard, the Federal Circuit said it was not clear that the district court applied the proper legal standard when it considered whether the case was exceptional under \u00a7285. The Federal Circuit said that instead of determining whether the case was exceptional,
it appears that the district court may have focused on whether one discrete portion of the case stood out from other cases, from all the other portions of this case, in terms of either the substantive strength of a position was advocating or the manner with which Intellectual Ventures was litigating.<\/p>\n\n\n\n

The Federal Circuit said that Section 285 gives the district court discretion to depart from the American Rule and award attorney fees \u201cin exceptional cases.\u201d Accordingly, under the statute, the district court in this case should
have determined whether the circumstances surrounding the expert\u2019s changed opinion were such that, when considered as part of the totality of circumstances in the case, the case stands out as exceptional.<\/p>\n\n\n\n

The Federal Circuit rejected Intellectual Venture’s argument that a case cannot be found exceptional based on a single, isolated act, holding that a district court has discretion, in an appropriate case, to find a case exceptional based on a single, isolated act. Whether the conduct is a single, isolated act or otherwise, the relevant question for the district court is the same. The district court must determine whether the conduct, isolated or otherwise, is such that when considered as part of and along with the totality of circumstances, the case is exceptional, i.e., the case stands out among others with respect to the substantive strength of a party\u2019s litigating position or the unreasonable manner in which the case was litigated. However in all cases there must be a finding of an exceptional case\u2014not a finding of an exceptional portion of a case\u2014to support an award of
partial fees.<\/p>\n\n\n\n

<\/p>\n\n\n\n

<\/p>\n","protected":false},"excerpt":{"rendered":"

In Intellectual Ventures I LLC v. Trend Micro Inc., [2019-1122] (December 19, 2019), the Federal Circuit vacated and remanded a finding of excptionality under 35 USC 285, because it was unclear whether the district court applied the proper legal standard. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[44],"tags":[],"class_list":["post-2608","post","type-post","status-publish","format-standard","hentry","category-attorneys-fees"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2608","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2608"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2608\/revisions"}],"predecessor-version":[{"id":2609,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2608\/revisions\/2609"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2608"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2608"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2608"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}